How to Prepare an Information Disclosure Statement after filing a Patent Application

Between the time period between the filing of a non-provisional utility patent application (or a design patent application) and the first office action by the United States Patent & Trademark Office (“USPTO”) it is highly recommended that an information disclosure statement be prepared by a Miami patent attorney with regard to any known and material patents, patent applications, and printed publication (including trade information) that may impact the scope and/or patentability of the underlying proposed patent claims.

An information disclosure statement (which is often abbreviated as an “IDS”) is a submission of relevant previously issued art or information by an applicant during patent prosecution. Inventors of filed patent applications have a duty (which extends to the inventor’s registered patent attorney) to disclose any known material prior art during the patent prosecution process. In short, there is a duty on all patent applicants to disclose such information that may be relevant to the patentability of the inventor’s invention.

The Code of Federal Regulations (specifically Section 1.97) outlines the duties and obligations of a patent applicant regarding such art (as well as the timeline for submission). That provision states that an IDS will be considered by the examiner during prosecution of the underlying patent application if filed before the USPTO within three months of filing of the patent application (or upon entry into the national stage of a PCT international application). Likewise, such an IDS would be considered if filed after the 3 month window but before the first office action issued by the examiner. References listed on an IDS are not automatically considered prior art, and the mere listing of a reference will not be taken by the USPTO has an admission of prior art against the underlying patent claims.

It should be noted that 37 C.F.R. 1.97 does not allow for extensions of time to file an IDS. An IDS likewise shall not be construed as a representation by the patent applicant that a patent search has been made. Likewise, an IDS filed after the three month window is subject to an additional fee (about $180 for a regular entity / $90 for a small entity).

Many Florida inventors have questions about what to file in an IDS. Certainly, a list of any relevant and material patents, patent publications, and printed publications should be included. If the information is not in English (but a translation is available) such translation should be included (or at the very least pertinent portions of such translated information). In addition, a statement of relevancy may be prepared which explains how the US pending claims are patentable over each piece of information that is not in the English language (and for which a translation is not provided). This is very important when it comes to patent applications filed on behalf of foreign entities.

The patent applicant’s duty to file an IDS (and/or supplement an IDS) with the USPTO ends upon issuance of the patent. Prior to such issuance, the duty remains on-going. As such, the duty to disclose is a continuing one.